Brand Battles: Bud Strikes Back In 'Spuds MacKenzie' Fight

 The fight over Spuds MacKenzie, Brand Battles: Bud Strikes Back In 'Spuds MacKenzie' Fight
Is this Spud for you?

Source: Law360

By Bill Donahue

July 28, 2017

In Law360's latest roundup of new actions at the Trademark Trial and Appeal Board, Anheuser-Busch opens up a new front in the fight over Spuds MacKenzie,

Spuds Spat   Anheuser-Busch filed an opposition at the board this week over Bud Light dog mascot Spuds MacKenzie - the latest front in an ongoing battle with an "entrepreneur" who claims he took ownership of the rights to the character after the beer giant abandoned them.

The filing against Mark Thomann came four months after he sued the beer maker over a Super Bowl ad that revived Spuds - an iconic 1980s campaign that was phased out by 1989 after critics raised concerns that the use of the dog was promoting underage drinking.

Thomann, who said he "revives dormant brands," claimed he'd taken ownership of the trademark rights to Spuds by selling t-shirts and other merchandise in the years since Bud had dropped the character. The Super Bowl ad, therefore, infringed his trademarks.

This week, the beer maker struck back, filing a TTAB opposition aimed at blocking Thomann from registering the name for bar and restaurant services.

"Spuds MacKenzie is the name of a well-known fictional dog created and owned by opposer," Anheuser-Busch wrote. "By applying to register the mark 'Spuds MacKenzie,' applicant is deliberately intending to pass off its services as those of opposer."

Pointing to statements in his own filing that say Spuds is a "well-known fictional dog," Anheuser-Busch told the board that Thomann has admitted that the beer maker owns the rights to the character.

"If there was any doubt that the name 'Spuds MacKenzie' is associated with Anheuser-Busch and its iconic canine character, one need look no further than Mr. Thomann's own belief and his sworn representations to the U.S. Patent and Trademark Office," the company wrote.

The filing did not mince words, calling Thomann "a self-styled entrepreneur whose business model is to co-opt famous brands." Anheuser-Busch pointed to a similar bid to register the defunct Cingular wireless brand.

"Applicant has a history of such intentional efforts to trade on the goodwill of brands created and made well-known by others but not currently in use," the company wrote.

In addition to being confusingly similar and falsely suggesting a connection to Anheuser-Busch's character, Thomann lacked a bona fide intent to use the mark and violated anti-assignment rules, according to the beer maker.

Thomann's lawsuit, filed in New York federal court, remains pending.

Anheuser-Busch is represented by Cooley LLP. Thomann is represented by Gioconda Law Group PLLC. The case number is 91235730.